Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: January 23, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01309
`Patent 9,036,853 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: January 23, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01309
`Patent 9,036,853 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`BACKGROUND
`I.
`On April 21, 2017, Freebit, AS (“Petitioner”) filed a Petition to
`institute inter partes review of claims 1–3, 5, 6, 8–11, and 13 of U.S. Patent
`No. 9,036,853 B2 (Ex. 1001, “the ’853 patent”). Paper 2 (“Pet.”). In
`particular, Petitioner argues 1–3, 5, 6, 8–11, and 13 of the ’853 patent are
`rendered obvious over the combined teachings of Sapiejewski (Ex. 1004)
`and those of Tan (Ex. 1005) or Howes (Ex. 1006). Pet. 5, 20–95. Bose
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). In its Preliminary Response, Patent Owner, contends that
`the named inventors conceived of and acted diligently actually to reduce the
`recited devices to practice before the effective date of Tan. Prelim Resp.
`17–22; Ex. 2001. Further, Patent Owner contends that Petitioner’s proposed
`combination of the teachings of Sapiejewski and Howes is flawed. Prelim.
`Resp. 22–35.
`On August 25, 2017, Petitioner submitted an e-mail request to file a
`Reply to Patent Owner’s Preliminary Response, “limited to [Patent Owner’s]
`attempt to antedate prior art reference Tan in light of a declaration, Ex. 2001,
`purporting to establish that the subject matter of the challenged claims was
`reduced to practice in May 2009.” IPR2017-01308, Ex. 3001. Petitioner
`conferred with Patent Owner, and Patent Owner indicated that it “will not
`oppose [Petitioner’s] request for a pre-institution reply to [Patent Owner’s]
`preliminary response, with the understand[ing] that the reply will be limited
`to 5-10 pages of attorney arguments regarding [Patent Owner’s] swear-
`behind of Tan, as you set forth in your e-mail and discussed on our call
`yesterday (8/23).” Id. We authorized Petitioner
`to file a Reply to Patent Owner’s Preliminary Response, strictly
`limited to responding to Patent Owner’s arguments to antedate
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`Tan in light of a declaration, Ex. 2001, purporting to establish
`that the subject matter of the challenged claims was reduced to
`practice in May 2009. See 37 C.F.R. §§ 42.23(b) (“A reply may
`only respond to arguments raised in the corresponding . . . patent
`owner preliminary response”), 42.108(c).
`Id. On September 1, 2017, Petitioner filed its Reply. Paper 7 (“Reply”). On
`November 14, 2017, after consideration of the entirety of the record, we
`denied institution of inter partes review of claims 1–3, 5, 6, 8–11, and 13 of
`the ’853 patent. Paper 8, 18 (“Inst. Dec.”).
`On December 8, 2017, Petitioner filed a Request for Rehearing (Paper
`9, (“Reh’g Req.”)) of our Institution Decision, requesting reconsideration of
`our decision denying institution of inter partes review of claims 1–3, 5, 6, 8–
`11, and 13 of the ’853 patent. Petitioner argues that (1) “the Board
`overlooked or misapprehended several points that were addressed in
`multiple places in the petition or in the supporting declaration of Petitioner’s
`expert witness” and (2) “the Board overlooked or misapprehended that
`Patent Owner suppressed or concealed its invention and therefore did not
`successfully antedate Tan.” Reh’g Req. 1–2. In particular, with regard to its
`first argument, Petitioner asserts that
`the Board misapprehended or overlooked at least three
`significant points. First, the Board overlooked explicit support
`provided in Dr. Staab’s declaration, erroneously determining that
`his opinions were “conclusory.” The Board also misapprehended
`or overlooked independent teachings in the Howes reference
`detailing the problem known in the art and the appropriate
`solution. Finally, the Board overlooked relevant teachings in
`Sapiejewski and Howes regarding in-ear retention and the
`corresponding motivation that a POSITA would have had to
`combine these references.
`
`3
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`Id. at 2. Petitioner further argues that, “[e]ven assuming that Patent Owner
`had an actual reduction to practice (‘ARP’) in March 2009[1] (which Patent
`Owner does not concede), the Board overlooked or misapprehended the fact
`that Patent Owner forfeited its rights to rely on that ARP by waiting too long
`to file its patent application.” Id. at 8.2
`We have considered Petitioner’s Request for Rehearing, and, for the reasons
`set forth below, Petitioner’s Request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, opposition, or a reply.
`(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756,
`48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a
`decision on petition, a panel will review the decision for an abuse of
`
`
`1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner
`mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at
`1, 10), as the date of actual reduction to practice, it is clear from Mr.
`Annunziato’s testimony and supporting evidence, that actual reduction to
`practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”).
`2 We note that Petitioner presented substantially identical arguments
`regarding Patent Owner’s antedating of Tan in its Request for Rehearing
`filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308,
`Paper 11. Our reasons for denying rehearing here regarding the antedating
`of Tan are substantially the same as the reasons presented in IPR2017-01307
`and IPR2017-01308.
`
`4
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`discretion.” An abuse of discretion occurs when a “decision was based on
`an erroneous conclusion of law or clearly erroneous factual findings, or . . . a
`clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties
`Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).
`
`III. DISCUSSION
`A. Combination of the Teachings of Sapiejewski and Howes
`
`As noted above, Petitioner argues three points that we allegedly
`overlooked or misapprehended. First, we allegedly overlooked support
`provided in Dr. Staab’s declaration, and, consequently, Petitioner argues that
`we erroneously determined that Dr. Staab’s testimony was “conclusory.”
`Reh’g Req. 2. Second, we allegedly misapprehended or overlooked
`independent teachings in Howes detailing the known, retention problem with
`in-ear earpieces and the appropriate solution. Id. Third, we allegedly
`overlooked relevant teachings in Sapiejewski and in Howes regarding in-ear
`retention and the corresponding motivation that a person of ordinary skill in
`the art would have had to combine the teachings of these references. Id. For
`the following reasons, we disagree.
`Petitioner argues that Dr. Staab’s testimony is not conclusory, but,
`instead, is supported by evidence. Id. at 3. Petitioner, however,
`misunderstands our determination of the conclusory nature of Dr. Staab’s
`testimony.
`Petitioner argues that:
`(“ID”)],
`[Institution Decision
`the
`As acknowledged
`in
`Sapiejewski is directed to an in-ear earphone. (ID at 4.) In his
`declaration (Ex. 1003, ¶ 22), Dr. Staab cites to the Background
`of Howes (as well as Tan) to support his position that a [person
`of ordinary skill in the art] would have known that in-ear
`
`5
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`earphones have a tendency to fall out of the concha of the user
`and were considered uncomfortable since the entire weight of the
`assembly was supported by a small portion of the ear. The
`petition cites to ¶ 22 of Dr. Staab’s declaration at page 19.
`Reh’g Req. 3 (emphasis provided by Petitioner).
`
`Nevertheless, we did not question the sufficiency of Dr. Staab’s
`testimony that there was a known, retention problem with in-ear earpieces as
`of the earliest priority date for challenged claims of the ’853 patent. See
`Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes
`discusses that problem and teaches a possible solution to that problem. See
`id. at 11–13. The failure in Petitioner’s argument and Petitioner’s
`declarant’s testimony was to draw the necessary link between the known
`problem and Howes’s possible solution and the teachings of Sapiejewski. In
`order to link this problem and its possible solution to the teachings of
`Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this
`testimony that we find unsupported and conclusory.
`
`As we noted in our Institution Decision, Dr. Staab testifies that:
`A [person of ordinary skill in the art] would have seen that the
`weight and overall size of the Sapiejewski earphone renders
`ineffectual the manner of coupling the acoustic elements of the
`earphone to the wearer’s ear described in the reference, i.e.,
`upper portion 802 of cushion 106 “shaped to make contact with”
`the tragus and antitragus. (Ex. 1004 at ¶ [0034]). Very little
`would prevent Sapiejewski from falling out of the ear during
`normal use such as talking and chewing, let alone during any
`semi-rigorous activity. But using a loop of resilient material in
`the general shape of the concha, as taught by Howes, would have
`been known to a [person of ordinary skill in the art] for solving
`the problem.
`Ex. 1003 ¶ 163, 183 (emphasis added); see Inst. Dec. 14. Dr. Staab fails to
`explain how a person of ordinary skill in the art would have known “the
`
`6
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`weight and overall size of the Sapiejewski earphone” or that such weights
`and sizes would create retention problems similar to those described by
`Howes. Petitioner offers no further explanation beyond its citation to
`Dr. Staab’s testimony. See Pet. 19 (“However, in-ear earphones at the time
`showed a tendency to fall out of the user’s concha and were deemed
`uncomfortable since the entire weight of the assembly was supported
`by a small portion of the ear.”; citing Ex. 1003 ¶ 22).
`
`Moreover, Petitioner acknowledges that:
`Although Sapiejewski is silent as to a similar type of positioning
`and retaining structure for retaining cushion 106 against the
`physical structure of the wearer’s ear, Sapiejewski is cognizant
`that some type of structure is necessary to provide this
`functionality by admitting that the “lower portion 110 [of the
`cushion 106] is not relied upon to provide retention of the
`earphone in the ear.”
`Pet. 37–38 (emphasis added, citing Ex. 1004 ¶ 34; Ex. 1003 ¶ 96); see Inst.
`Dec. 15. Dr. Staab further testifies that:
`As previously mentioned, a POSITA viewing Sapiejewski would
`immediately realize the problem with adequately retaining such
`an earphone in the ear: Cushion 106 is “designed to comfortably
`couple the acoustic elements of the earphone to the physical
`structure of the wearer’s ear,” but it does not use any part of the
`concha effectively for this purpose, and lower portion 110 of the
`cushion (which inserts into the ear canal) “is not relied upon to
`provide retention of the earphone in the ear.” (Ex. 1004 at
`¶ [0034]). Rather, the Sapiejewski earphone is only retained by
`upper portion 802 of the cushion being “shaped to make contact
`with the tragus 16 and anti-tragus 18 of the ear.” (Id.)
` Ex. 1003 ¶ 157 (emphasis added). Thus, neither Petitioner nor its declarant
`argues that Sapiejewski mentions the known, retention problem, but both
`Petitioner and its declarant argue that a person of ordinary skill in the art
`
`7
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`could have improved Sapiejewski by modifying its teachings in view of
`those of Howes. See Inst. Dec. 17.
`
`Sapiejewski, however, does not teach the need for any such
`“improvement.” As we noted in the Institution Decision, Sapiejewski states
`that:
`
`The cushion 106 is designed to comfortably couple the acoustic
`elements of the earphone to the physical structure of the wearer’s
`ear.
`Ex. 1004 ¶ 34 (emphases added); see Inst. Dec. 16. Thus, neither Petitioner
`nor its declarant provides evidence that Sapiejewski suffered from the
`known problem, and there is evidence from Sapiejewski’s specification that
`its earphone did not suffer from this problem. Specifically, we determined
`that
`
`neither Petitioner nor its declarant explains why a general need
`to secure an earpiece in an ear would lead to adding a positioning
`and retaining structure in the context of Sapiejewski’s teachings,
`when that function allegedly already is provided by the
`Sapiejewski device, besides seeking the benefits described in the
`’853 patent – a reason tainted by hindsight.
`Inst. Dec. 17–18 (citations omitted).
`Consequently, we considered fully Petitioner’s arguments and
`Dr. Staab’s testimony, including any supporting evidence, in view of
`Sapiejewski’s disclosure. Based on this consideration, we agreed with
`Patent Owner that “Petitioner relies on a far too general reason to combine
`the references and engages in impermissible hindsight as to the particular
`combination of the teachings of Sapiejewski and Howes.” Id. at 17.
`
`8
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`B. Antedating of Tan
`1. Delay in Preparing Application
`
`Petitioner argues that we overlooked or misapprehended that Patent
`Owner suppressed or concealed its invention by waiting for an unreasonably
`long period of time after the actual reduction of the invention to practice to
`file a patent application disclosing the invention. Reh’g Req. 8–10.
`“Petitioner does not challenge the Board’s determination that ‘the period of
`the delay from actual reduction to practice to the filing of the provisional
`patent application [“the critical period”] was closer to fourteen months …
`[than to the seventeen months that Freebit argued]’” (id. (quoting IPR2017-
`01308 Inst. Dec. 31–32)),3 and Petitioner acknowledges that “[n]either the
`statute, the rules, nor any opinion of either the Federal Circuit or the Board
`sets a bright-line rule for how long is too long” (id. at 9). Petitioner argues,
`however, that the unexcused delay was unreasonably long. In particular,
`Petitioner argues that “whether the critical period at issue was too long has
`been decided on a case-by-case basis taking into account the complexity of
`the invention and the deciding entity’s assessment of how long it should
`have taken reasonably competent counsel to draft a patent application on the
`invention.” Id. Petitioner argues that Patent Owner bore the burden of
`producing evidence of “Peeler diligence” (id. at 10 (citing Peeler v. Miller,
`535 F.2d 647 (CCPA 1976)), such that we may assess the reasonableness of
`the delay, but failed to do so here.
`
`
`3 The Institution Decision in this case relied on the Institution Decision in
`IPR2017-01308 for the discussion of the Tan reference. Inst. Dec. 10.
`9
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`Initially, we note that Petitioner did not raise these arguments
`anywhere in its Petition or its authorized Reply to Patent Owner’s
`Preliminary Response. Not only did Petitioner fail to raise the issue of
`“Peeler diligence,” but Petitioner’s Request for Rehearing does not include a
`single citation to its Petition or to its Reply on this point. Thus, Petitioner’s
`Request for Rehearing fails to identify the place where each matter that
`allegedly was overlooked or misapprehended was previously addressed in a
`motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for
`rehearing is not an opportunity for the requestor to present new arguments or
`evidence. It goes without saying that we could not have overlooked or
`misapprehended arguments that Petitioner did not make, and it is not an
`abuse of discretion not to consider such arguments.
`
`2. Delay to Perfect the Invention
`
`In Lutzker v. Plet, our reviewing court agreed that “[a]n inference of
`suppression or concealment may be overcome with evidence that the reason
`for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir.
`1988); see IPR2017-01308 Inst. Dec. 32. Nevertheless, the delay could not
`be excused (1) if “the delay is caused by working on refinements and
`improvements which are not reflected in the final patent application,” or (2)
`if “the activities which caused the delay go to commercialization of the
`invention.” Id. In its Reply, Petitioner focused on the length of the delay
`between the actual reduction to practice and the filing of a patent
`application. Reply 3–4. Petitioner, however, made only cursory and
`
`10
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`conclusory reference to Patent Owner’s activities4 between the actual
`reduction to practice and the filing of a patent application. See Reply 4
`(“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds
`(if not thousands) of hours trying out and testing different designs for ear
`interfaces is not credible.”). Petitioner now argues that “all the alleged work
`carried out by [Patent Owner] to complete the [printed circuit board] is
`irrelevant to the suppression/concealment issue because it was not reflected
`in the final patent application, and rather, was relevant simply for
`commercialization.” Reh’g Req. 12. We continue to disagree.
`As we noted in the IPR2017-01308 Decision on Institution, the
`challenged independent claim recites an acoustic driver module. Inst. Dec.
`33 (citing Ex. 1001, 11:13–17 (claim 1); see also, e.g., id. at 2:5–12
`(describing the acoustics driver as transducing acoustic signal to acoustic
`energy)).5 The record shows that, although the works-like prototype
`satisfied the limitations recited in the challenged claims and worked for its
`intended purpose, the need for improvement remained, especially with
`respect to audio performance. Id. at 35–36 (citing, e.g., Ex. 2001 ¶ 14, Ex.
`D, 2–3); see Inst. Dec. 33 n.9. Although Petitioner did not find Mr.
`Annunziato’s testimony credible, we found “Mr. Annunziato’s testimony
`
`
`4 On this record, we are persuaded that the activities of Mr. Annunziato and
`his team inure to the benefit of Patent Owner. IPRInst. Dec. 20 (“Moreover,
`Petitioner does not dispute that the actions discussed in Patent Owner’s
`declarant’s, Mr. Annunziato’s, declaration or the supporting exhibits inure to
`the benefit of the named inventors. See NFC Tech., [LLC v. Matal, 871 F.3d
`1367,] 1374 [(Fed. Cir. 2017)].”)
`5 The evidence on the acoustic driver and claim 1 from IPR2017-01308 is
`essentially the same as claim 1 of the ’853 patent for the relevant purpose in
`this case.
`
`11
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`corroborated, credible, and, ultimately, convincing.” Id. at 30. Thus, in
`view of the record, as a whole, we remain persuaded that the record contains
`sufficient evidence supporting Patent Owner’s efforts to perfect the claimed
`invention. Id. at 30–34.
`C. Conclusion
`A request for rehearing is not merely the opportunity for the requester
`to reargue positions, elaborate on previous positions, or to disagree with the
`analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-
`Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017)
`(Paper 39)(“Merely disagreeing with our analysis or conclusions does not
`serve as a proper basis for a request for rehearing.”). Instead, the requester
`must identify previously-presented arguments and/or evidence that the panel
`overlooked or misapprehended or evidence of abuse of discretion by the
`panel. Petitioner fails to do so here.
`
`IV. ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`12
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`PETITIONER:
`
`Todd Baker
`cpdocketbaker@oblon.com
`
`John Presper
`cpdocketpresper@oblon.com
`
`Tia Fenton
`cpdocketfenton@oblon.com
`
`
`PATENT OWNER:
`
`W. Karl Renner
`Axf-ptab@fr.com
`
`David Holt
`Holt2@fr.com
`
`Andrew Kopsidas
`kopsidas@fr.com
`
`
`
`13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
